In today’s competitive marketplace, a trademark is often the only means by which a business can distinguish itself and its services from its competitors. The name, device, symbol and expression you choose to do this needs to be yours and yours alone. You must protect these identifying marks from potential infringement, and trademark registration is the way to get that done.
Encroaching on a Competitor’s Brand
Although any trademark you select must be unique, there are numerous ways in which yours might fail to make the grade. To pass the test, a trademark must stand out from the crowd. When compared to those that already exist, it must be entirely dissimilar in:
- Appearance. Two identical names will always be identical, and an offbeat font or color scheme won’t suffice in setting one apart from the other.
- Phonetic Equivalence. While inconsistent to the eye, names like “Patience” and “Patients” are twins to the ear and could be considered the same.
- Connotation. Although “Aguila” in Spanish, “Aigle” in French and “Eagle” in English may look and sound unique, the fact that each denotes the same feathered friend could disqualify two at least.
- Commercial impression. The use of the same design element in two separate trademarks can easily constitute an infringement.
The strongest trademarks are always the most fanciful or arbitrary. Names like “Boopsie” for a clothing store or “Taxi” for a hamburger joint are unlikely to step on anyone’s toes. Suggestive marks like “Steam-n-Clean” or “Player” are also strong, although some could cross the line into descriptive territory.
Weak trademarks, on the other hand, can easily land you in hot water. The United States Patent and Trademark Office, or USPTO, has been known to refuse registration of descriptive trademarks such as “Peanut Peddler” that do nothing more than illustrate a company’s service or goods. Weakest of all are generic trademarks like “Socks” or “Doughnuts.” These will never pass muster with the trademark police.
Common-Law Trademark Rights
Some people believe that the simple addition of TM or SM to a trademark will suffice to protect it. That is only partially true. Such common-law rights will normally apply only within state boundaries. While they may prevent local companies from borrowing your mark, they do nothing to protect you nationwide.
Federally Protected Trademarks
Although not a legal necessity, a federally registered trademark will protect you in all 50 states. In addition to serving as public notice of ownership, a federally registered mark will give you the right to:
- Use your trademark nationwide.
- Display the federal registration symbol.
- Sue for infringement damages in federal court.
- Apply for registration in other countries.
- File with the United States Customs Service to forestall infringement through imported foreign goods.
To obtain a federal registration, you must show that you use or intend to use your trademark in interstate commerce.
Can I File the Application on My Own?
Yes. It is legally permissible to do this yourself. In filing the trademark application, however, you will have embarked upon a legal proceeding that is often complex and rife with regulations and time constraints.
To avoid the headaches, most people will hire a trademark attorney to assist them. The experts at Odgers Law Group will help you avoid costly mistakes by:
- Offering guidance on choosing the strongest and least-risky trademark.
- Conducting a thorough search of all currently registered federal and state trademarks.
- Advising you of potential pitfalls.
- Successfully filing and, if need be, litigating your application.
To further assist in ensuring your proper registration, one of our qualified trademark attorneys will perform a thorough investigation of existing unregistered trademarks. These will not appear in the USPTO’s electronic database and could throw a monkey wrench into the works if one should appear out of nowhere.
Keeping Your Trademark Safe
After the USPTO has registered your trademark, it is up to you to protect it. In addition to seeing you through the entire registration process, the experts at Odgers Law Group will assist in policing its use and enforcing your rights if someone should accuse you of infringement.
Your trademark says so much about you, and its thoughtful selection can make or break your company’s future. The business attorneys at Odgers Law Group will see that you get this done right. Call us today at 858-869-1114.
